Ex Parte Nelson et al

Patent Trial and Appeal Board

Jul 24, 2017

13323190 (P.T.A.B. Jul. 24, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/323,190 12/12/2011 Jonathan D. Nelson 225439-7/GECA-862 4847
7590 07/25/2017
Dority & Manning, P.A. and Haier US Appliance
Solutions, Inc.
Post Office Box 1449
Greenville, SC 29602-1449
EXAMINER
CAMPBELL, THOR S
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
07/25/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN D. NELSON, CRAIG LUNG-PEI TSAI,
JEFFREY ALAN KERN, ELIEL FRESCO RODRIGUEZ,
MICHAEL T. BEYERLE, DEREK LEE WATKINS,
TIMOTHY ALLEN HAMEL, and MARLIN ZENTHER
Appeal 2016-003821
Application 13/323,190
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jonathan D. Nelson et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 1—3, 19, 20, and 22—21} We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Claims 4—18, 30, and 31 are withdrawn from consideration. Final Act. 1.
Claims 21, 28, and 29 are canceled. Appeal Br. 16, 18 (Claims App.).
Appeal 2016-003821
Application 13/323,190
THE CLAIMED SUBJECT MATTER
Independent claims 1,19, 26, and 27 are pending and at issue. Claim
1, reproduced below, illustrates the claimed invention, with a disputed
phrase italicized.
1. A heat pump water heater comprising:
a water storage tank comprising a sidewall and a bottom
wall; and
a condenser comprising a side portion that is wrapped
around the sidewall, the condenser being positioned in a heat
exchange relationship with the water storage tank to heat
contents of the water storage tank and having an inlet and an
outlet,
wherein the inlet of the condenser is positioned
proximate the bottom wall of the water storage tank so that
refrigerant flow through the condenser can be initiated through
the side portion of the condenser that is proximate the bottom
wall of the water storage tank.
REJECTIONS
I. Claims 1, 19, 20,2 and 25 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Dieckmann (US 5,946,927, iss. Sept. 7, 1999).
Final Act. 2.
II. Claim 24 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Dieckmann. Id. at 4.
III. Claims 2, 3, 22, 23, 26, and 27 stand rejected on the ground of
non-statutory double patenting as unpatentable over claims 1—12, 20, and 21
of Nelson (US 8,422,870 B2, iss. Apr. 16, 2013). Id.
2 The Examiner includes claim 21 in the statement of Rejection I, although
claim 21 has been canceled. Appeal Br. 16 (Claims App.). We understand
that this is a typographical error.
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Application 13/323,190
ANALYSIS
Rejections I and II
The dispositive issue for Rejections I and II is whether Dieckmann’s
water heater includes a condenser inlet positioned “proximate the bottom
wall of the water storage tank so that refrigerant flow through the condenser
can be initiated through the side portion of the condenser that is proximate
the bottom wall of the water storage tank.” Relevant to this limitation,
Appellants’ Specification states that Figure 5B depicts “the vapor flow first
entering] the cylindrical portion of condenser 508. The inlet to this portion
of the condenser is located at the lower most point 509 of the cylindrical
portion.” Spec. 20,11. 13—15.
The Examiner initially finds that a combination of Dieckmann’s
Figures 3 and 4 discloses this limitation, because Dieckmann’s “Figure 4
shows that the compressor 50 discharges [via a condenser inlet] into the
lower portion of the condenser 60” which, according to Figure 3, is
“positioned proximate the bottom wall 54.” Final Act. 3. The Examiner
makes a similar finding for independent claim 19. Id.
Appellants argue that Dieckmann’s “Figure 4 is a schematic diagram”
that cannot support a finding regarding a location of Dieckmann’s condenser
inlet relative to its condenser 60. Appeal Br. 5. According to Appellants,
one skilled in the art would understand that Dieckmann’s schematic Figure 4
only discloses that vapor flows from the compressor 50 into the condenser
60 generally, rather than supporting a finding regarding the location of the
vapor inlet relative to the condenser. Id. Appellants further assert that,
although Dieckmann’s Figure 3 illustrates condenser tubes 62 proximate a
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Application 13/323,190
bottom wall, “no inlet to the condenser 60” is illustrated to support a finding
regarding its location. Id. at 7.
According to the Examiner, because Dieckmann’s lower condenser
tubes 62 are proximate its bottom wall 54 and wrap around its tank 60, and
because the condenser tubes 62 are connected to an outlet of the compressor
50, “it is reasonable to interpret the compressor outlet (in the form of the
high pressure vapor line shown in Figure 4) as the inlet for the condenser.”
Ans. 4—5. The Examiner contends that, because Appellants do not define the
term “condenser inlet,” it is reasonable to find that the connection of the
compressor outlet (in the form of the high pressure vapor line of
Dieckmann’s Figure 4) directly to the condenser puts the condenser inlet
proximate the bottom wall. Id. at 5
Appellants reply that the Examiner’s interpretation of the term “inlet”
is unreasonably broad, and that even if such an interpretation is correct,
Dieckmann in no way supports the Examiner’s finding that its compressor
outlet/condenser inlet is “necessarily proximate the bottom wall of the water
storage tank.” Reply Br. 3.
Appellants have the better argument. We agree that Dieckmann’s
schematic Figure 4 cannot form the basis for findings regarding the relative
positioning of components and their connections in an implemented system
such as that shown in Figure 3. For instance, Dieckmann’s Figure 4 shows
high pressure liquid line 64 originating at the top of the condenser, whereas
Figure 3 of Dieckmann shows line 64 originating at the bottom of the
condenser. Figure 4 thus does not provide sufficient disclosure of
Dieckmann’s actual inlet and outlet locations to support the Examiner’s
findings. Dieckmann’s Figure 3 is a sectional view that more accurately
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Application 13/323,190
depicts the arrangement of Dieckmann’s components than the schematic
illustration of Dieckmann’s Figure 4, yet still does not disclose the
condenser inlet being positioned proximate the bottom wall 54. See
Dieckmann, col. 3,11. 42-45. Based on the above-note discrepancies among
Dieckmann’s Figures, we agree with Appellants that Dieckmann’s Figure 4
does not disclose a location of the inlet of the condenser. The Examiner’s
finding that Figure 4 of Dieckmann supports the interpretation that the inlet
to Dieckmann’s condenser is at the bottom of the bottom wall of the storage
tank is, at best, speculative.
Because there are alternate reasonable locations for Dieckmann’s
condenser inlet, it is not necessarily true that the location of compressor 50
in Dieckmann’s Figure 3 puts the inlet of condenser 60 proximate the
bottom wall of the water storage tank.
We, therefore, are not persuaded that the Examiner has established
prima facie anticipation. We do not sustain the rejection of independent
claims 1 and 19, and claims 20 and 25 depending from claim 19.
Regarding claim 24, the Examiner’s modification of Dieckmann does
not cure the deficiencies of Dieckmann discussed supra, and we do not
sustain the rejection of claim 24. See Final Act. 4.
Rejection III
Appellants do not argue the substance of this rejection, and instead
offer to file a Terminal Disclaimer to overcome the rejection. Appeal Br. 8.
Because the rejection is not provisional and is made in view of claims in an
issued patent, the rejection is ripe for resolution. Appellants have waived
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Application 13/323,190
any arguments directed to the propriety of the rejection. The rejection is
summarily sustained. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We REVERSE the rejection of claims 1,19, 20, and 25 as anticipated
by Dieckmann.
We REVERSE the rejection of claim 24 as unpatentable over
Dieckmann.
We AFFIRM the rejection of claims 2, 3, 22, 23, 26, and 27 on the
ground of non-statutory double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED-IN-PART
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